Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper 39
`Entered: June 6, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`Case IPR2017-00336
`Patent 6,959,293 B2
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`On May 25, 2017, we entered an Institution Decision, instituting an
`inter partes review only as to claim 22 of U.S. Patent No. 6,959,293 B2
`(Ex. 1001, “the ’293 patent”), but not with respect to claims 1, 18, 19, and
`
`
`Tel: 571.272.7822
`
`
`Paper 39
`Entered: June 6, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`Case IPR2017-00336
`Patent 6,959,293 B2
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`On May 25, 2017, we entered an Institution Decision, instituting an
`inter partes review only as to claim 22 of U.S. Patent No. 6,959,293 B2
`(Ex. 1001, “the ’293 patent”), but not with respect to claims 1, 18, 19, and
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`29 and for the sole ground that claim 22 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Pirim.1 Paper 15, 53.
`On February 6, 2018, Patent Owner requested authorization to file a
`motion to terminate ex parte reexamination Control No. 90/014,056
`(“the ’056 Reexamination”), arguing that Petitioner’s Reexamination
`Request was its third challenge to the ’293 patent and used our Institution
`Decisions in the instant proceeding and Case IPR2017-01189 (“the ’189
`IPR”) as a “roadmap” to bolster previously unsuccessful arguments.
`Paper 31, 2. Petitioner countered that its Petitions and Reexamination
`Request do not amount to harassment of Patent Owner. Id. at 3. For the
`reasons stated in our prior Order, we agreed with Petitioner, and declined to
`exercise our discretion to authorize Patent Owner to file a motion to
`terminate the ’056 Reexamination. Id. at 3−5.
`On April 24, 2018, the United States Supreme Court held that a
`decision to institute under 35 U.S.C. § 314 may not institute on less than all
`claims challenged in the petition. SAS Institute Inc. v. Iancu, 138 S. Ct. 134
`(2018). In light of the Guidance on the Impact of SAS on AIA Trial
`Proceedings, we modified our Institution Decision to institute on all of the
`challenged claims and all of the grounds presented in the Petition, including
`claims 1, 18, 19, and 29. Paper 37.
`On May 9, 2018, we entered a Final Written Decision, determining
`that Petitoiner has demonstrated by a preponderance of the evidence that
`claim 22 is unpatentable, but not that claims 1, 18, 19, and 29 are
`unpatentable. Paper 38.
`
`
`1 WO 99/36893, issued July 22, 1999 (Ex. 1005).
`2
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`On May 31, 2018, a conference call was held between respective
`counsel for the parties and Judges Chang, Zecher, and Kaiser. During the
`conference call, Patent Owner renewed its request for leave to file a motion
`to terminate the ’056 Reexamination. For the reasons stated below, Patent
`Owner’s request is denied.
`Like its prior request, Patent Owner urged us to exercise our
`discretion under 35 U.S.C. § 315(d)2 to terminate the ’056 Reexamination.
`See Paper 31, 2. In support of its argument, Patent Owner again cited to two
`Board decisions, Ariosa and General Plastic. Ariosa Diagnostics, Inc. v.
`Illumina, Inc., Case IPR2014-01093, slip op. at 13−16 (PTAB May 24,
`2016) (Paper 81) (The panel exercised its discretion to terminate three
`reexaminations filed by a party after entering a final written decision against
`that same party in one of the IPR proceedings that involved the same
`claims.); General Plastic Indus. Co. v. Canon Kabushiki Kaisha, Case
`IPR2016-01357, slip op. at 15−19 (PTAB Sept. 6, 2017) (Paper 19)
`(precedential) (The panel exercised its discretion under 35 U.S.C. § 314(a)
`to deny the follow-on petitions filed by the same petitioner that challenged
`the same claims as those involved in the first set of petitions.).
`Patent Owner’s reliance on these cases is misplaced here. For the
`same reason stated in our prior Order (Paper 31, 3−4), we are not convinced
`that Petitioner’s IPR Petitions and Request for Reexamination amount to
`
`2 Under 35 U.S.C. § 315(d), “[n]otwithstanding sections 135(a), 251, and
`252, and chapter 30, during the pendency of an inter partes review, if
`another proceeding or matter involving the patent is before the Office, the
`Director may determine the manner in which the inter partes review or other
`proceeding or matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.” 35 U.S.C.
`§ 315(d) (emphases added).
`
`3
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`harassment of Patent Owner. Unlike Ariosa and General Plastic each of
`which involves the same claims in multiple proceedings, the two IPR
`Petitions filed by Petitioner here involve different claims. As Petitioner
`explained, the challenged claims in the instant proceeding are those initially
`asserted by Patent Owner in the related district court case,3 whereas the
`challenged claims in the ’189 IPR are those subsequently asserted by Patent
`Owner in amended infringement contentions. More importantly, unlike the
`particular facts in Ariosa and General Plastic, the ’189 IPR Petition was not
`an attempt to perfect the instant Petition, as the ’189 IPR Petition was filed
`before the entry of the Institution Decision in the instant proceeding.
`Therefore, Petitioner here did not have the benefit of our Institution Decision
`at the time of filing the ’189 IPR Petition, much less the advantage of the
`Patent Owner’s Response or the cross-examination of Patent Owner’s
`expert, as in Ariosa.
`In addition, as noted in our prior Order, Petitioner’s Reexamination
`Request challenges only claim 1 based on different grounds. Paper 31, 4.
`Because claims 1, 18, 19, 22, and 29 were denied institution initially, Patent
`Owner’s Response did not include any argument or expert testimony as to
`these claims. Paper 37, 2 (noting that both parties affirmatively waived
`briefing as to these newly instituted claims). Hence, Petitioner did not have
`the advanatage of the Patent Owner’s Response or the cross-examination of
`Patent Owner’s expert regarding claim 1 at the time of filing the Request for
`Reexamination. Moreover, merely notifying the Examiner in the ’056
`Reexamination of our claim construction in this instant proceeding (Paper
`
`
`3 The ’293 patent is involved in Image Processing Techs., LLC v. Samsung
`Elecs. Co., Case No. 2:16-cv-00505-JRG (E.D. Tex.). Paper 4, 2.
`4
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`15, 10) does not amount to using our Institution Decision as a “roadmap” to
`bolster previously unsuccessful arguments, as Patent Owner alleges.
`We also are not convinced by Patent Owner’s argument that the ’056
`Reexamination causes unnecessary delay to the related district court case,
`which has been stayed in view of the proceedings before the Office. As
`Patent Owner conceded during the conference call, Patent Owner requested
`an extension of time for filing a response to the Examiner’s Office Action
`that was mailed on March 26, 2018. Furthermore, in the related district
`court case, Patent Owner also asserted two other patents, U.S. Patent Nos.
`6,717,518 B1 and 8,983,134 B2, which are involved in two other IPR
`proceedings, Cases IPR2017-01190 and IPR2017-01218, respectively. The
`final written decisions for these IPR proceedings are not due until October 3,
`2018.
`Upon consideration of the totality of the circumstances, we once again
`decline to exercise our discretion to authorize Patent Owner to file a motion
`to terminate the ’056 Reexamination.
`ORDER
`
`In view of the foregoing, it is
`ORDERED that Patent Owner’s renewed request for authorization to
`file a motion to terminate the ’056 Reexamination is denied.
`
`5
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`
`
`For PETITIONER:
`
`Nicholas Whilt
`John Kappos
`Marc Pensabene
`Brian Cook
`Clarence Rowland
`O’MELVENY & MYERS LLP
`nwhilt@omm.com
`jkappos@omm.com
`mpensabene@omm.com
`bcook@omm.com
`crowland@omm.com
`iptsamsungomm@omm.com
`
`
`For PATENT OWNER:
`
`Chris Coulson
`Michael Zachary
`Lauren N. Robinson
`Craig Y. Allison
`ANDREWS KURTH KENYON LLP
`chriscoulson@andrewskurthkenyon.com
`michaelzachary@andrewskurthkenyon.com
`lrobinson@bdiplaw.com
`callison@bdiplaw.com
`
`
`6
`
`
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